Technology + Law

Last year the U.S. Patent and Trademark Office (USPTO) hired about 100 students for “extern” positions. This year the USPTO plans to double the number of externs — to 200 or more.

According to USPTO Director David Kappos:
“The PEEP program is one of our premier methods of finding talented individuals who are able to do the kind of challenging and rewarding work we do here at the USPTO. It represents a unique opportunity for students to get hands-on experience and truly learn what it is like to work at the Patent Office.

“This program helps us identify and recruit future, fulltime patent examiners, a facet that has several implications for the program. PEEP integrates theories learned at universities with real-world practice and implementation of those theories, with substantive work within our offices and technology centers. Though the specific duties vary based on the student’s selected position and their level of education, I can assure all those interested in PEEP that they will not only be challenged by what we have in store, but will also be encouraged to learn and enjoy working at the USPTO. I’m in close contact with the individuals heading up the program for us this summer, and I know they are dedicated to ensuring that it will be our best yet.”

1) The House of Representatives passed H.R. 1249 (aka the Leahy-Smith America Invents Act) by a voice vote of 304 to 117. The House bill will now have to be reconciled with the Senate version. The bill would do away with the current first-to-invent regime and replace it with a first-to-file system.

2) In the case of Microsoft v. i4i (SCOTUS 10-290), the U.S. Supreme Court rejected Mircrosoft’s argument that the clear and convincing evidentiary standard in patent cases should be replaced by a preponderance of the evidence rule. Scalia, Kennedy, Ginsburg, Breyer, Alioto, and Kagan joined the opinion, and Thomas wrote a concurring opinion. Roberts recused himself since he owns stock in Microsoft. This is a victory for patent owners.

3) Apple Computer’s trademark “App Store” is “probably” not infringed by Amazon’s “Amazon Appstore for Android”, according to U.S. District Judge Phyllis Hamilton, who stated after a hearing that she is “probably” going to deny the motion because Apple hasn’t demonstrated confusion among consumers. (Source: Bloomberg News).

4) The trademarks for the Palin’s names (Sarah Palin and Bristol Palin have now been issued. Strange that this was not reported in the media, though the iniitial rejection by the Trademark Office was widely noted.

On June 20th the U.S. Supreme Court granted certiori in the case of Mayo Collaborative Services v. Promethius Laboratories, Inc. This patents at issue are: US Patent No. 6,355,623 and US Patent No. 6,680,302 which involve methods for treating certain gastrointestinal disorders such as inflammatory bowel disease (IBD), Crohn’s disease, and ulceritive colitus. The patents involve methods for testing the patient’s blood for the presence of 6-thioguanie and administering a particular dosage of 6-meercaptopurine. The method also ensures that the administered drug is not toxic to the subject at the level administered.

Appellant Mayo (defendant in the case below) argues that these patents are invalid because they involve non-statutory subject matter. The question presented is:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.

That was the question put to U.S. District Court Judge Catherine D. Perry by plaintiff tattoo artist S. Victor Whitmill, the person who created the tattoo adorning former boxer Mike Tyson’s face. When the “Tyson tattoo” was worn by actor Ed Helms in the film The Hangover: Part II, Mr. Whitmil sued for copyright infringement. In its answer, Warner Bros. stated that tattoos (or any other artwork on the human body) are not copyrightable. Although there is limited case law on human body artwork, the Copyright Act merely requires that the work be fixed in a tangible form. Putting ink to skin is analogous to putting it to paper, so the argument would seem to lack merit.

The other defense raised by Warner Brothers is more substantive. Warner Bros. also stated that the usage of the Tyson tattoo on the character’s face was a form of parody protected under the Fair Use Docrine. The character was portrayed in the film as being cowardly / weak. There is humor in portraying him with Mike Tyson’s face tattoo. But humor is not the same as parody.

Mr. Morgan received a J.D. degree from Saint John's University School of Law in 1998 and an M.S. in Computer Science from Farleigh Dickinson University in 1993. Before becoming a patent attorney, Mr. Morgan worked for several years as a patent examiner at the United States Patent & Trademark Office, where he examined patent applications in Class 705 (business methods). Mr. Morgan also has over a decade experience as a software engineer for a Fortune 100 company.